Is there any pre-issuance 3rd Party Submission mechanism in the United States? Yes, Pre-Issuance Submissions under 37 CFR 1.290 and Protest under 37 CFR 1.291 are currently available.
Submission of prior art publications must be timely filed prior to the earlier of: (A) the date a notice of allowance or (B) the later of: (i) 6 month post-publication; or (ii) the date of first claim rejection. The pre-issuance submission mechanism can apply to non-provisional utility, design, and plant applications (including Cons, Divs & CIPs; not including provisional applications, issued patents, reissues, or reexams). A concise description of the asserted relevance of each submitted publication is essential, while arguments against patentability should not be included. The prior art publications may relates to any patentability issues of the application that the 3rd party is challenging, such as, novelty, non-obviousness, enablement, written description and definiteness. The 3rd party can be anonymous, and the filing fee is very low ($180 per 10 documents, no fee for 3 or fewer documents with “first and only” statement).
As a supplement to pre-issuance submission mechanism, the protest mechanism can apply to all kinds of pending application, including reissues. By the protest mechanism, a concise explanation of the relevance of each submitted item allows for arguments against patentability, and the information of non-publication (such as prior public use) can be submitted. In addition, the first time protest is free. However, the protest mechanism has a high requirement on filing timing. The protest should be filed prior to the date the application was published, or a notice of allowance was mailed, whichever occurs first, except that the protest is accompanied with a written consent of the applicant.
One of the potential risks of the above two 3rd party submission mechanisms lies in that a third party’s participation in the patent prosecution process is limited and the submitted references may even inadvertently strengthen the patent that the party is challenging. However, compared to the high cost, long time patent infringement and invalidity lawsuits in the United States, the pre-issuance submission mechanism and the protest mechanism are valuable choices to challenge patent the applications that the 3rd party views as threatening or dangerous.